UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
U.S. REGISTRATION NO. 3216755
OWNER: COSTA DEL MAR, INC.
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CORRESPONDENT’S ADDRESS: |
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MARK: FORGET-THEY'RE-ON-FIT
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CORRESPONDENT’S REFERENCE/DOCKET NO. 5118.8652.16
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 12/5/2016
U.S. Registration Number 3216755
The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on September 06, 2016, cannot be accepted for the reasons set forth below.
ISSUES PERTAINING TO SECTION 8 PORTION ONLY
Specimen
The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of advertising material for goods and does not show use of the registered mark on the goods or on packaging for the goods. See TMEP §904.04(b)-(c).
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use. TMEP §904.04(b). Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
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Signature of Authorized Person
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Type or Print Name
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Date
The following persons are authorized to sign a Combined Section 8 Affidavit & Section 9 Renewal Application on behalf of the owner:
(1) A person with legal authority to bind the owner;
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; and
(3) An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the issuance date of this Office action or on or before the registration expiration date of March 13, 2017, whichever is later. The owner must respond to all inquiries set forth in this Office action to avoid cancellation and/or expiration of the registration. 37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16, 1606.12 and 1606.13(a).
DEFICIENCY SURCHARGE INFORMATION: A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after the registration expiration date of March 13, 2017. 37 C.F.R. §§2.6, 2.164(a)(1) and 2.185(a)(1).
ADVISORY: If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation and/or expiration of its registration by filing a new affidavit of use and a new renewal application within the grace period. 37 C.F.R. §§2.163(c) and 2.184(b)(1). Additional fees are required to file a new renewal application during the grace period. 37 C.F.R. §§2.161(d)(1)-(2) and 2.183(b)-(c). For more information about this, please contact the undersigned.
/James Wilson/
James Wilson
Trademark Program Analyst
Post Registration Divsion (on work project)
Office of Trademark Services
Office 571
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this registration will be placed in the official registration record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.